Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA503521
`ESTTA Tracking number:
`11/02/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Petition for Cancellation
`
`Notice is hereby given that the following party requests to cancel indicated registration.
`Petitioner Information
`
`Name
`Entity
`Address
`
`Mountain View Marketing, Inc.
`Corporation
`215 N 1800 W
`Lindon, UT 84042-1627
`UNITED STATES
`
`Citizenship
`
`Utah
`
`Attorney
`information
`
`Robert L. Kinder
`Dickstein Shapiro LLP
`1825 Eye St., NW
`Washington, DC 20006
`UNITED STATES
`kinderr@dicksteinshapiro.com, dunmirek@dicksteinshapiro.com
`Phone:202-420-3029
`Registration Subject to Cancellation
`
`Registration No
`Registrant
`
`3331124
`Oakley, Inc.
`One Icon
`Foothill Ranch, CA 92610
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`Registration date
`
`11/06/2007
`
`Class 009. First Use: 2005/01/01 First Use In Commerce: 2005/01/01
`All goods and services in the class are cancelled, namely: Protective eyewear, namely spectacles,
`prescription eyewear, anti glare glasses and sunglasses and their parts and accessories, namely
`replacement lenses, frames, earstems, and nose pieces; cases specially adapted for spectacles and
`sunglasses and their parts and accessories; and protective clothing, namely, racing pants
`
`Grounds for Cancellation
`
`False suggestion of a connection
`The registration is being used by, or with the
`permission of, the registrant so as to
`misrepresent the source of the goods or services
`on or in connection with which the mark is used.
`Priority and likelihood of confusion
`
`Trademark Act section 2(a)
`Trademark Act section 14
`
`Trademark Act section 2(d)
`
`Related
`Proceedings
`
`United States District Court for the Southern District of California - styled Oakley,
`Inc. v. Mountain View Marketing, Inc., Case No. 11-CV-1607 (CAB).
`
`Marks Cited by Petitioner as Basis for Cancellation
`
`

`
`U.S. Registration
`No.
`Registration Date
`
`2249305
`
`06/01/1999
`
`Word Mark
`Design Mark
`
`PUGS EYEGEAR
`
`Application Date
`
`02/19/1998
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`U.S. Application/
`Registration No.
`Registration Date
`Design Mark
`
`NONE
`
`Class 009. First use: First Use: 1998/01/29 First Use In Commerce: 1998/02/01
`eyewear, namely, sunglasses
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`Goods/Services
`
`Eyewear, sunglasses, and their parts and accessories.
`
`Attachments
`
`75436753#TMSN.gif ( 1 page )( bytes )
`
`

`
`Petition for Cancellation.pdf ( 33 pages )(22331275 bytes )
`PUGS2.jpg
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Signature
`Name
`Date
`
`/Robert L. Kinder/
`Robert L. Kinder
`11/02/2012
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Before the Trademark Trial and Appeal Board
`
`In re Registration 3,33 l ,l24
`Issued November 6, 2007
`
`MOUNTAIN VIEW MARKETING,
`INC.
`
`Petitioner,
`
`V.
`
`OAKLEY, INC.
`
`Respondent.
`
`\../\../\_/\.—/\..—/\../\../\./’\../\../\~.p4\.../\-.../\../
`
`Cancellation No.
`
`PETITION FOR CANCELLATION
`
`Mountain View Marketing, Inc., a Utah corporation whose address is 215 N I800 W,
`
`Lindon, UT 84042-1627 ( “Petitioner”), believes that it is and will be damaged by Registration
`
`No. 3,331,124 (“the ‘ I24 Registration”) with respect to the goods in at least International Class
`
`09, and for any goods relating to eyewear and sunglasses and their parts and accessories, which
`
`was registered on November 6, 2007, by Oakley, Inc., a Washington Corporation, located and
`
`doing business at One Icon, Foothill Ranch, California 92610 (“Respondent”), and hereby
`
`petitions to cancel the same.
`
`The grounds for cancellation are as follows:
`
`1. Petitioner is a Utah corporation providing a broad range of goods to retailers,
`
`including, eyewear, sunglasses, and their parts and accessories.
`
`2. Since at least August 2004, Petitioner has used and continues to use at least the
`
`following PUGS trademarks for eyewear, sunglasses, and their parts and accessories:
`
`DOCSLA-l 02999vl
`
`

`
`.
`
`R
`‘xx
`
`57-99
`is HIE Ill
`
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`5 osmrlimz.
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`“Ii5:J.‘Ll2Ifi Vim L‘ar<:‘J'.';. lr.:'...___..-
`
`it
`
`i
`*
`\~‘.M,,,,,,\‘,,,,,‘.,,,,,M,‘,w,,,,,‘.‘\,__
`
`.
`
`$6.99
`int 1% ll
`\\\\6 ”37°7"°"‘” i°
`mnsrmvlcxduxii-0;
`uo.-awn V.;w Mamuix;
`
`,~
`
`3. Since at least the early 2000s, the Petitioner has continuously used the PUGS
`
`trademarks as identified in ‘ll 2, or Variations thereof, in interstate commerce to identify and
`
`distinguish its eyewear and sunglasses and their parts and accessories from those of others.
`
`4. Petitioner is also the owner of Trademark Registration No. 2,249,305 (“the PUGS
`
`‘305 Registration”), a copy of which is attached as Exhibit A.
`
`5. Since at least January 29, l998, Petitioner has used and continues to use the ‘305
`
`PUGS Registration for eyewear, sunglasses, and their parts and accessories. An illustration of
`
`the PUGS ‘305 Registration is as follows:
`
`
`
`6. Since at least January 29, i998, Petitioner has continuously used the mark which is
`
`the subject of the PUGS ‘305 Registration in interstate commerce to identify and distinguish its
`
`eyewear and sunglasses and their parts and accessories from those of others.
`
`DOCSLA- l 02999v l
`
`

`
`7. The PUGS trademark identified in ‘fl 2 and the mark referred to in the PUGS ‘305
`
`Registration (collectively “the PUGS Marks”) are now and ever since its date of first use have
`
`been extensively used in connection with the providing of eyewear, sunglasses, and their parts
`
`and accessories. Petitioner has extensively advertised and promoted the goods offered under the
`
`PUGS Marks and provides a website (wWw.pugsgear.com) which is accessible by the public. As
`
`a result of the quality of Petitioner’s goods, the advertising for such goods, and Petitioner’s
`
`reputation for fair dealing with the trade and the public, the PUGS Marks are strong marks with
`
`valuable goodwill belonging exclusively to Petitioner.
`
`8. On July 21, 2011, Respondent filed a Complaint against Petitioner in the United
`
`States District Court for the Southern District of California — styled Oakley, Inc. v. Mountain
`
`View Marketing, Inc. , Case No. 1l—CV-I607 (CAB).
`
`in its Amended Cornplaint, filed on August
`
`1, 20l2 (hereinafter, attached as Exhibit B, “Am. Oakley Coniplf’), Respondent alleges, inter
`
`alia, infringement of the ‘ 124 Registration. A copy of the ‘ 124 Registration is attached as
`
`Exhibit C. Respondent alleges to be the owner of the ‘ 124 Registration, which was registered
`
`with the USPTO on November 6, 2007, covering the goods and services listed therein. The mark
`
`claimed by the ‘ 124 Registration is as follows:
`
`
`
`9.
`
`in its Amended Complaint, Respondent alleges that use of the PUGS Marks are
`
`confusingly similar to the ‘I24 Registration when used in connection with the sale, offering for
`
`DOCSLA—l 02999v I
`
`

`
`sale, distribution or advertising of goods in a manner which is likely to cause confusion, or to
`
`cause mistake. Am. Oakley Compl. ‘J11 68-76.
`
`10. “[I]nconsistent allegations contained in prior pleadings are admissible in subsequent
`
`litigation.” Dugan v. EMS Helicopters, Inc, 915 F.2d 1428, l43l (10th Cir. i990). As such,
`
`Respondent’s statements in its Amended Complaint that the PUGS Marks are likely to cause
`
`confusion among the purchasing public are admissions against it for purposes of these
`
`proceedings. For example, Oakley alleges:
`
`a. With regards to Federal Trademark Infringement: “Defendant uses in
`
`commerce marks that are confusing similar to the Oakley Marks in connection
`
`with the sale, offering for sale, distribution or advertising of goods in a
`
`manner which is likely to cause confusion, or to cause mistake, or to deceive.”
`
`Am. Oakley Compl. ‘ii 72.
`
`b. With regards to Federal Unfair Competition & False Designation of Origin:
`
`“Such conduct by Defendant is likely to confuse, mislead, and. deceive
`
`Defendant’s customers, purchasers, and members of the public as to the origin
`
`of the Oakley Marks or cause said persons to believe that Defendant and/or its
`
`products have been sponsored, approved, authorized, or licensed by Oakley or
`
`are in some way affiliated or connected with Oakley, all in violation of l5
`
`U.S.C. § ll25(a), resulting in a loss of goodwill, reputation and other
`
`damages. Am. Oakley Compl. ‘J 81.
`
`ll. The ‘ l 24 Registration states that the trademark is used in connection with “Protective
`
`eyewear, namely spectacles, prescription eyewear, anti glare glasses and sunglasses and their
`
`DOCSLA-1 02999vl
`
`

`
`parts and accessories, namely replacement lenses, frames, earstems, and nose pieces.” The ‘ 124
`
`Registration states that it was first used in commerce for such goods on January 1, 2005. Ex. C.
`
`12. Because the Petitioner used the PUGS Marks prior to Oakley’s adoption and use of
`
`the mark depicted in the ‘ 124 Registration for at least “Protective eyewear, namely spectacles,
`
`prescription eyewear, anti glare glasses and sunglasses and their parts and accessories, namely
`
`replacement lenses, frames, earstems, and nose pieces,” the Petitioner has superior rights for
`
`such trademarks. Ex. C.
`
`l3. Based upon the admissions within the Respondents Amended Complaint, the ‘ 124
`
`Registration so closely resembles Petitioner’s previously used PUGS Marks that potential
`
`purchasers of the goods to be offered under the ‘ 124 Registration would be likely to believe that
`
`the Petitioner is the source of such goods, or that the Petitioner has authorized, sponsored,
`
`approved of, or in some other manner associated itself with the services of the Respondent,
`
`thereby creating a likelihood of confusion, deception or mistake, all to the damage of the
`
`Petitioner.
`
`14. The Petitioner is being damaged by the ‘ 124 Registration because such registration
`
`supports and assists Respondt-:nt’s confusing and misleading use of the Petitioner’s marks and
`
`gives color of exclusive statutory rights to the Respondent in Violation and derogation of the
`
`prior and superior rights of the Petitioner to the PUGS Marks.
`
`15. Petitioner is being further damaged by the continued existence of the ‘ 124
`
`Registration for the following reasons:
`
`a. Respondent’s registration casts a cloud upon the Petitioner’s title to its PUGS
`
`Marks; and
`
`DOCSLA-l 02999v l
`
`

`
`b. Respondent’s registration is being used to prevent the Petitioner from using
`
`the PUGS Marks.
`
`16. By reason of the foregoing, the Petitioner believes that it is being damaged by the
`
`continued existence of the ‘124 Registration.
`
`WHEREFORE, Petitioner requests that the Petition for Canceilation of Registration No.
`
`3,331,124 be granted and that the registration be cancelled.
`
`MOUNTAIN VIEW MARKETENG, INC.
`
`Dated: November 2, 2012
`
`By:
`
`
`
`"
`’
`—='»“
`Robert L. Kinder
`DICKSTEIN SHAPIRO LLP
`
`
`
`Attorney for Petitioner
`1825 Eye Street, N.W.
`Washington, D.C. 20006
`
`DOCSLA-102999vI
`
`

`
`Certificate of Service
`
`I hereby certify that a true and complete copy of the foregoing Petition for Cancellation
`
`has been served on Oakley, Inc. (pursuant to Trademark Rule 2.11 l) by mailing said copy on
`
`November 2, 2012, via First Class Mail to: One Icon, Foothhill Ranch, California 92610.
`
`As a courtesy to Oakley’s counsel, a copy of the foregoing Petition for Cancellation was
`
`also served on Oakley’s counsel in the district court litigation styled Oakley, Inc. v. Mountain
`
`View Marketing, Case No. ll—CV-1607 (CAB), by mailing said copy on November 2, 20l2, via
`
`First Class Mail to; Ali S. Razai, Knobbe, Martens, Olson & Bear LLP, 2040 Main Street, 14th
`
`Floor, San Diego, CA 926l4
`
`Dated: November 2, 20 l 2
`
` Robert L. Kinder
`
`By:
`
`DICKSTEIN SHAPIRO LLP
`
`Attorney for Petitioner
`l825 Eye Street, N.W.
`Washington, DC. 20006
`
`DOCSLA— 1 02999vl
`
`

`
`EXHIBIT A
`
`

`
`Int. CL: 9
`
`Prior US. C15,: 21, 23, 26, 36 and 38
`
`Reg. No. 2,249,305
`Registered June 1, 1999
`United States Patent and Trademark Office
`
`TRADEMARK .
`PRINCIPAL REGISTER
`
`
`
`MOUNTAIN VIEVV MARKETENG. iNC. (UTAH
`CORPORATION)
`1518 WEST 400 SOUTH, BUILDING 2
`OREM, UT 84058
`
`NO CL/UM IS MADE TO THE EXCLUSIVE
`RIGHT TO USE “EYEGEAR“. APART FROM
`THE MARK AS SHOWN.
`THE STIPPLXNG IS FOR SHADING PUR-
`POSES ONLY AND DOES NOT INDICATE
`COLOR.
`
`FOR: EYEWEAR. NAMELY. SUNGLASSES,
`IN CLASS 9 (US. CLS. 21, 23, 26, 36 AND 38).
`
`SER. N0. 7S—436,7S3, FILED 2~~!9~~}998,
`
`FIRST USE
`244998.
`
`I—29—1998;
`
`IN COMMERCE
`
`ANDREW A. ROPPEL, EXAMINING ATTOR-
`NEY
`
`

`
`EXHIBIT B
`
`

`
`ase 3:l1—cv—Ol607—CAB-WMC Document 44 Filed 08/01/12 Page 1 of 21
`
`MichaeI K. Friedland (State Bar No. 157,217)
`mfriedIand@I<nobbe.com
`Paul N. Conover (State Bar No. 192,358)
`Qconover@knobbe.corn
`Lauren Keller Katzenellenbogen (State Bar No. 223,370)
`Iauren.keIIer@I<nobbe.com
`AIi S. Razai (State Bar No. 246,922)
`aIi.razai@I<nobbe.com
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street
`Fourteenth Floor
`
`Irvine, CA 92614
`Phone: (949) 760-0404
`Facsimfle: (949) 760-9502
`
`Attorneys for Plaintiff
`OAKLEY, INC.
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE SOUTHERN DISTRICT OF CALIFORNIA
`
`OAKLEY, INC., a Washington corporation;
`
`PIaintiff,
`
`V .
`
`MOUNTAIN VIEW MARKETING, INC.,
`61 Utah corporation,
`
`Defendant.
`
`CiviI Action No. 1 1cVI607 CAB (WMC)
`
`FIRST AMENDED COMPLAINT FOR
`
`PATENT INFRINGEMENT,
`TRADEMARK INFRINGEMENT,
`FALSE DESIGNATION OF ORIGIN,
`TRADEMARK DILUTION AND
`UNFAIR COMI’ETI'I‘ION
`
`JURY DEMANDEI)
`
`%/’\./\./\./\./\/\../\./\./'\_/%/
`
`1
`
`U14%.U4
`
`8 9
`
`10
`
`1]
`
`12
`
`I3
`
`14
`
`15
`
`I6
`
`1 7
`
`18
`
`19
`
`20
`
`2]
`
`22
`
`23
`
`24
`
`25
`
`26 3
`27
`
`28
`
`I I
`
`

`
`ix)
`
`U14);U.)
`
`Ox
`
` ase 3:11—cv—01607—CAB-WMC Document 44 Filed 08/01/12 Page 2 of 21
`
`Marketing, Inc. (“Mountain View”) and alleges as follows:
`
`Plaintiff Oakley, Inc. (“Oakley”) hereby complains of Defendant Mountain View
`
`I. JURISDICTION AND VENUE
`
`l.
`
`This Court has original subject matter jurisdiction over the claims in this
`
`action that relate to patent infringement, trademark infringement, false designation of origin,
`
`trademark dilution, and unfair competition pursuant to sections 3-4(a) and 39 of the Lanham
`
`Act, 15 U.S.C. §§ lll6(a) and ll2l(a), and 28 U.S.C. §§ l33l and l338, as these claims
`
`arises under the laws of the United States. The Court has supplemental jurisdiction over the
`
`claims in this Complaint which arise under state statutory and common law pursuant to 28
`
`U.S.C. § l367(a) because the state law claims are so related to the federal claims that they
`
`form part of the same case or controversy and derive from a common nucleus of operative
`
`facts.
`
`2.
`
`This Court has personal jurisdiction over Defendant because Defendant has a
`
`continuous, systematic, and substantial presence within this judicial district including by
`
`selling and offering for sale infringing products for sale in this judicial district, and by
`
`committing acts of patent infringement, trademark infringement, trademark dilution, false
`
`designation of origin, and unfair competition in this judicial district, including but not limited
`
`to selling infringing eyewear directly to consumers in this district and selling into the stream
`
`of commerce knowing such products would be sold in this state and this district, which acts
`
`form a substantial part of the events or omissions giving rise to Oakley,/’s claims.
`
`3.
`
`Venue is proper in thisjudicial district under 28 USC. §§ l39l and 28 USC.
`
`§ l400(b).
`
`II. THE PARTIES
`
`4.
`
`Plaintiff Oakley is a corporation organized and existing under the laws of the
`
`State of Washington, having its principal place of business at One Icon, Foothill Ranch,
`
`California 92610.
`
`///
`
`///
`
`First Amended Complaint
`
`

`
`ase 3:.‘t1—cv~O1607-CAB—WMC Document 44 Filed 08/01/12 Page 3 of 21
`
`U4
`
`U1
`
`xx
`
`10
`
`5.
`
`Oakley is
`
`informed and believes, and thereon alleges,
`
`that Defendant
`
`Mountain View is a corporation organized and existing under the laws of the state of Utah
`
`and having an office and a place of business at 215 N 1800 W, Lindon, Utah 84042, that sells
`
`steepiy discounted eyewear.
`
`6.
`
`Oakley is informed and believes, and thereon alleges,
`
`that Defendant has
`
`committed the acts alleged herein within thisjudicial district.
`
`111. GENERAL ALLEGATIONS
`
`7.
`
`Oakley has been actively engaged in the manufacture and sale of high quality,
`
`premium eyewear under the Oakley brand since at least 1985. Oakley is the manufacturer
`
`and retailer of several lines of high—end eyewear that have enjoyed substantial success and are
`
`protected by various intellectual property rights owned by Oakley.
`
`8.
`
`On February 7, 1995,
`
`the United States Patent and Trademark Office
`
`(“U.S.P.T.O”) duly and lawfully issued United States Patent No. 5,387,949 (“the ’949
`
`patent”), entitled “EYEGLASS CONNECTION DEVlCE.” Oakley is the owner by
`
`assignment of all right, title, and interest in the ’949 patent. A true and correct copy of the
`
`’949 patent is attached hereto as Exhibit A.
`
`9.
`
`On June 10, 1997, the U.S.P.T.O. duly and lawfully issued United States
`
`I8
`
`Patent No. 5,638,145 (“the ’ 145 patent”), entitled “VENTED EYEGLASS LENS.” Oakley is
`
`the owner by assignment of all right, title, and interest in the ’ 145 patent. A true and correct
`
`copy of the ’ 145 patent is attached hereto as Exhibit B.
`
`it).
`
`On May 29, 2007,
`
`the U.S.P.'l‘.O. duly and lawfully issued United States
`
`Design Patent No. D543,572 (“the D572 patent”), entitled “EYEGLASS,” designing and
`
`claiming the design and ornamentation disclosed therein. Oakley is the owner by assignment
`
`of all right, title, and interest in the D572 patent. A true and correct copy of the D572 patent
`
`is attached hereto as Exhibit C.
`
`/ /' /
`
`/ / /
`
`/ / /
`
`-2-
`
`First Amended Complaint
`
`

`
`ase 3:11—cv—O1607—CAB-WMC Document 44 Filed 08/01/12 Page 4 of 21
`
`11.
`
`On June 1, 2010,
`
`the U.S.P.T.O. duly and lawfully issued United States
`
`Design Patent No. D616,919 (“the D919 patent”), entitled “EYEGLASS FRONT,” designing
`
`and claiming the design and ornamentation disclosed therein. Oakley is the owner by
`
`assignment of all right, title, and interest in the D919 patent. A true and correct copy of the
`
`D919 patent is attached ‘hereto as Exhibit D.
`
`12.
`
`On November 25, 2008, the U.S.P.T.O. duly and lawfully issued United States
`
`Design Patent No. D581,450 (“the D450 patent”). entitled “EYEGLASS,” designing and
`
`claiming the design and ornamentation disclosed therein. Oakley is the owner by assignment
`
`of all right, title, and interest in the D450 patent. A true and correct copy of the D450 patent
`
`is attached hereto as Exhibit E.
`
`13.
`
`On January 28, 2003, the U.S.P.T.O. duly and lawfully issued United States
`
`Patent No. D469,458 (“the D458 patent”), entitled “EYEGLASS FRONT,” designing and
`
`claiming the design and ornamentation disclosed therein. Oakley is the owner by assignment
`
`of all right, title, and interest in the D458 patent. A true and correct copy of the D458 patent
`
`is attached hereto as Exhibit F.
`
`14.
`
`On November 25, 2008, the U.S.P.T.O duly and lawfully issued United States
`
`Patent No. D581,451 (“the D451 patent”), entitled “EYEGLASS,” designing and claiming
`
`the design and ornamentation disclosed therein. Oakley is the owner by assignment of all
`
`right, title, and interest in the D451 patent. A true and correct copy of the D451 patent is
`
`attached hereto as Exhibit G.
`
`15.
`
`On November 6, 2007, the U.S.P.T.O. duly and lawfully issued United States
`
`i’atent No. D554,689 (“the D689 patent”), entitled “EYEGLASS FRAME,” designing and
`
`claiming the design and ornamentation disclosed therein. Oakley is the owner by assignment
`
`of all right, title, and interest in the D689 patent. A true and correct copy of the D689 patent
`
`is attached hereto as Exhibit H.
`
`16.
`
`On January 26, 1999, the U.S.P.T.O. duly and lawfully issued United States
`
`Patent No. D404,754 (“the D754 patent”), entitled “EYEGLASS FRONT,” designing and
`
`claiming the design and ornamentation disclosed therein. Oakley is the owner by assignment
`
`-3-
`
`First Amended Complaint
`
`~KUof\)
`
`U:
`
`N 0
`
`0
`
`

`
`ase 3:11-cv—Ol607—CAB—W1\/1C Document 44 Filed 08/01/12 Page 5 of 21
`
`be
`
`-lb.
`
`U1
`
`00
`
`10
`
`J]
`
`12
`
`of all right, title, and interest in the D754 patent. A true and correct copy of the D754 patent
`
`is attached hereto as Exhibit 1.
`
`17.
`
`On July 8, 2008, the U.S.P.T.O. duly and lawfully issued United States Patent
`
`No. D5"/2,747 (“the D747 patent”), entitled “EYEGLASS AND EYEGLASS FRONT,”
`
`designing and claiming the design and ornamentation disclosed therein. Oakley is the owner
`
`by assignment of all right, title, and interest in the D747 patent. A true and correct copy of
`
`the D747 patent is attached hereto as Exhibit J.
`
`18.
`
`In order to protect Oal<ley’s investment in the development of its proprietary
`
`technology, Oakley has obtained numerous trademark registrations including Trademark
`
`Registration Nos. 3,331,124, 2,616,423, 2,146,295, and 1,984,501 (the “Oakley Marks”).
`
`19.
`
`Oakley is the owner of Trademark Registration No. 3,331,124. Trademark
`
`Registration No. 3,331,124 was registered with the U.S.P.T.O. on November 6, 2007 on the
`
`Principal Register. Trademark Registration No. 3,331,124 is associated with the following
`
`goods: protective eyewear, namely spectacles, prescription eyewear, anti glare glasses and
`
`sunglasses and their parts and accessories, namely replacement lenses, frames, earstems, and
`
`nose pieces; cases specially adapted for spectacles and sunglasses and their parts and
`
`accessories; and protective clothing, namely, racing pants; clothing, namely, t—shirts, beach-
`
`wear, blouses, sports shirts, jerseys, swimwear, swimtrunks, shorts, underwear, shirts, pants,
`
`ski and snowboard pants and jackets, jeans, vests, jackets, wetsuits, sweaters, pullovers, coats,
`
`sweatpants, headwear, namely, hats, caps, visors and footwear, namely wetsuit booties, shoes,
`
`sandals, athletic footwear, all purpose sports footwear, thongs and boots. A true and correct
`
`copy of the certificate of registration of Trademark Registration 3,331,124 is attached hereto
`
`as Exhibit K.
`
`20.
`
`Oakley is the owner of Trademark Registration No. 2,616,423. Trademark
`
`Registration No. 2,616,423 was registered with the U.S.P.T.O. on September 10, 2002 on the
`
`Principal Register. Trademark Registration No. 2,616,423 is associated with the following
`
`goods: protective and/or anti—glare eyewear, namely, sunglasses, spectacles and their parts
`
`and accessories, namely, replacement lenses, earstems, frames, nose pieces and foam strips;
`
`-4-
`
`First Amended Complaint
`
`

`
`
`
`ase3:11-ev-01607-CAB—WMC Document 44 Filed O8/O1/12 Page6ot21
`
`K.-
`
`S\oO<>\10\kn4\“wt\)
`
`hm ’‘\4
`
`>\. l\)
`
`cases specially adapted for protective and/or anti-glare eyewear and their parts and
`
`accessories. A true and correct copy of the certificate of registration of Trademark
`
`Registration 2,616,423 is attached hereto as Exhibit L.
`
`21.
`
`Oakley is the owner of Trademark Registration No. 2,146,295. Trademark
`
`Registration No. 2,146,295 was registered with the U.S.P.T.O. on March 24, 1998 on the
`
`Principal Register. Trademark Registration No. 2,146,295 is associated with the following
`
`goods: protective and/or anti-glare eyewear, namely, sunglasses, goggles, spectacles and their
`
`parts and accessories, namely, replacement lenses, earstems, frames, nose pieces and foam
`
`strips; cases specially adapted for protective and/or anti—glare eyewear and their parts and
`
`accessories. A true and correct copy of the certificate of registration of Trademark
`
`Registration 2,146,295 is attached hereto as Exhibit M.
`
`22.
`
`Oakley is the owner of Trademark Registration No. 1,984,501. Trademark
`
`Registration No. 1,984,501 was registered with the U.S.P.T.O. on July 2, 1996 on the
`
`Principal Register. Trademark Registration No. 1,984,501 is associated with the following
`
`goods: protective and/or anti—glare eyewear, namely sunglasses, goggles, spectacles and their
`
`parts and accessories, namely replacement lenses, earstems, frames, nose pieces and foam
`
`strips; cases specially adapted for protective and/or anti—glare eyewear and their parts and
`
`accessories; clothing and headwear, namely T-shirts, sweatshirts, jackets, hats, and caps. A
`true and correct copy of the certificate of registration of Trademark Registration 1,984,501 is
`
`attached hereto as Exhibit N.
`
`23.
`
`24.
`
`The Oakley Marks have not been abandoned, canceled or revoked.
`
`Each of the Oakley Marks constitute an enforceable trademark that uniquely
`
`identifies,
`
`inter alia, sunglasses as emanating from, sponsored by, and/or authorized by
`
`Oakley.
`
`25.
`
`As a result of the widespread use and display of each of the Oakley Marks as a
`
`distinctive trademark identifying, inter alia, eyewear and related components, (a) the public
`
`has come to recognize and identify products bearing any of the Oakley Marks as emanating
`
`from Oakley, (b) the public recognizes that products bearing any of the Oakley Marks
`
`—5—
`
`First Amended Complaint
`
`

`
`ase 3:11-cv—O1607—CAB—WMC Document 44 Filed 08/01/12 Page 7 of 21
`
`constitute high quality products that conform to the specifications created by Oakley, and (c)
`
`the each of the Oakley Marks has established strong secondary meaning and extensive
`
`goodwill.
`
`
`IV. FIRST CLAIM FOR RELEEF
`
`(Patent Infringement)
`(35 U.S.C. § 271)
`
`O\LIu~|§k~l\.>
`
`26.
`
`Oakley repeats and re—alleges the allegations of paragraphs l—25 of this
`
`Complaint as if set forth fully herein.
`
`27.
`
`This is a claim for patent infringement arising under 35 U.S.C. § 271.
`
`28.
`Defendant,
`through its agents, employees and servants, has knowingly,
`intentionally and willfully directly infringed, engaged in acts of contributory infringement,
`
`and/or induced the infringement of the ’949 patent by directly and/or indirectly making,
`
`using, selling, offering for sale and/or importing products which were covered by one or more
`
`claims of the ’949 patent.
`
`29.
`
`Defendant’s acts of infringement of the ’949 patent were undertaken without
`
`permission or license from Oakley. Defendant had actual and/or constructive knowledge of
`
`the ’949 patent, and its actions constitute willful and intentional infringement of the ’949
`
`patent.
`
`30.
`
`As a direct and proximate result of Defendant’s infringement of the ‘949
`
`patent, Defendant has derived and received gains, profits, and advantages in an amount not
`
`presently known to Oakley.
`
`31.
`
`Defendant, through its agents, employees and servants, has, and continues to,
`
`knowingly,
`
`intentionally and willfully directly infringe, engage in acts of contributory
`
`infringement, and/or induce the infringement of the ’145 patent by directly and/or indirectly
`
`making, using, selling, offering for sale and/or importing products which are covered by one
`
`or more claims of the ’ 145 patent.
`
`32.
`
`Defendant’s acts of infringement of the ’l45 patent were undertaken without .
`
`permission or license from Oakley. Defendant had actual and/or constructive knowledge of
`
`-6~
`
`First Amended Complaint
`
`

`
`ase 3:l1—cv—O1607—CAB—WMC Document 44 Filed 08/01/12 Page 8 of 21
`
`the ’l45 patent, and its actions constitute willful and intentional infringement of the ’l45
`
`patent.
`
`C'\U1~|=.ba
`
`J0
`
`J]
`
`12
`
`33.
`
`As a direct and proximate result of Defendant’s infringement of the ‘145
`
`patent, Defendant has derived and received gains, profits, and advantages in an amount not
`
`presently known to Oakley.
`
`3
`
`34.
`
`Defendant, through its agents, employees and servants, has, and continues to,
`
`knowingly,
`
`intentionally and willfully directly infringe, engage in acts of contributory
`
`infringement, and/or induce the infringement of the D572 patent by directly and/or indirectly
`
`making, using, selling, offering for sale and/or importing products which are covered by one
`
`or more claims of the D572 patent.
`
`35.
`
`Defendant’s acts of infringement of the D572 patent were undertaken without
`
`permission or license from Oakley. Defendant had actual and/or constructive knowledge of
`
`the D572 patent, and its actions constitute willful and intentional infringement of the D572
`
`patent.
`
`36.
`
`As a direct and proximate result of Defendant's infringement of the D572
`
`patent, Defendant has derived and received gains, profits, and advantages in an amount not
`
`presently known to Oakley.
`
`37.
`
`Pursuant to 35 U.S.C. § 289, Oakley is entitled to Defendant’s total profits
`
`from Defendant’s infringement of the D572 patent.
`
`38.
`
`Defendant, through its agents, employees and servants, has, and continues to,
`
`knowingly,
`
`intentionally and willfully directly infringe, engage in acts of contributory
`
`infringement, and/or induce the infringement of the D919 patent by directly and/or indirectly
`
`making, using, selling, offering for sale and/or importing products which are covered by one
`
`or more claims of the D919 patent.
`
`39.
`
`Defendant’s acts of infringement of the D919 patent were undertaken without
`
`permission or license from Oakley. Defendant had actual and/or constructive knowledge of
`
`the D919 patent, and its actions constitute willful and intentional infringement of the D919
`
`patent.
`
`First Amended Complaint
`
`

`
`ase 3:l1—Cv—OZl607—CiAB—WMC Document 44 Filed 08/01/12 Page 9 of 21
`
`40.
`
`As a direct and proximate result of Defendant’s infringement of the D919
`
`patent, Defendant has derived and received gains, profits, and advantages in an amount not
`
`presently known to Oakley.
`
`41.
`
`Pursuant to 35 U.S.C. § 289, Oakley is entitled to Defendanfs total profits
`
`from Defendant’s infringement of the D919 patent.
`
`42.
`
`Defendant, through its agents, employees and servants, has, and continues to,
`
`knowingly,
`
`intentionally and willfully directly infringe, engage in acts of contributory
`
`infringement, and/or induce the infringement of the D450 patent by directly and/or indirectly
`
`making, using, selling, offering for sale and/or importing products which are covered by one
`
`or more claims of the D450 patent.
`
`43.
`
`Defendant’s acts of infringement of the D450 patent were undertaken without
`
`permission or license from Oakley. Defendant had actual and/or constructive knowledge of
`
`the D450 patent, and its actions constitute willful and intentional infringement of the D450
`
`patent.
`
`44.
`
`As a direct and proximate result of Defendant’s infringement of the D450
`
`patent, Defendant has derived and received gains, profits, and advantages in an amount not
`
`presently known to Oakley.
`
`45.
`
`Pursuant to 35 U.S.C. § 289, Oakley is entitled to Defendant’s total profits
`
`from Defendant’s infringement of the D450 patent.
`
`46.
`
`Defendant, through its agents, employees and servants, has, and continues to,
`
`knowingly,
`
`intentionally and willfully directly infringe, engage in acts of contributory
`
`infringement, and/or induce the infringement of the D458 patent by directly and/or indirectly
`
`making, using, selling, offering for sale and/or importing eyewear which are covered by the
`
`D450 patent, including at least Defendant’s Pugs Style 160] sunglasses.
`
`47.
`
`Defendant’s acts of infringement of the D458 patent were undertaken Without
`
`permission or license from Oakley. Defendant had actual and/or constructive knowledge of
`
`the D458 patent, and its actions constitute willful and intentional infringement of the D458
`
`U1‘ll;U»)N)
`
`10
`
`11
`
`12
`
`I3
`
`14
`
`15
`
`I6
`
`17
`
`I8
`
`19
`
`20
`
`2]
`
`22
`
`23
`
`24
`
`25
`
`26 i
`27
`
`28
`
`patent.
`
`First Amended Complaint
`
`

`
`ase 3:11-cv-Ol607—CAB—Wl\/EC Document 44 Filed 08/01/12 Page 10 of 21
`
`Ix)
`
`-kxbo
`
`48.
`
`As a direct and proximate result of Defendant’s infringement of the D458
`
`patent, Defendant has derived and received gains, profits, and advantages in an amount not
`
`presently known to Oakley.
`
`49.
`
`Pursuant to 35 U.S.C. § 289, Oakley is entitled to Defendant’s total profits
`
`from Defendant’s infringement of the D458 patent.
`
`50.
`
`Defendant, through its agents, employees and servants, has, and continues to,
`
`knowingly,
`
`intentionally and willfully directly infringe, engage in acts of contributory
`
`infringement, and/or induce the infringement of the D451 patent by directly and/or indirectly
`
`making, using, selling, offering for sale and/or importing eyewear which are covered by the
`
`D451 patent, including at least Defendant’s Pugs Polarized Style 5 and Pugs Polarized Style
`
`6 sunglasses.
`
`51.
`
`Defendant’s acts of infringement of the D451 patent were undertaken without
`
`permission or license from Oakley. Defendant had actual and/or constructive knowledge of
`
`the D451 patent, and its actions constitute willful and intentional infringement of the D451
`
`patent.
`
`52.
`
`As a direct and proximate result of Defendant’s infringement of the D451
`
`patent, Defendant has derived and received gains, profits, and advantages in an amount not
`
`presently known to Oakley.
`
`53.
`
`Pursuant to 35 U.S.C. § 289, Oakley is entitled to Defendant’s total profits
`
`from Defendant’s infringement of the D451 patent.
`
`54.
`
`Defendant, through its agents, employees and servants, has, and continues to,
`
`know